Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Dorbath et al. to US 5,252,522 (hereafter Dorbath) and further in view of Frens et al, to “Controlled Nucleation for Regulation of the Particle Size in Monodisperse Gold Suspensions” (Submitted by applicant on 06/30/2020 for application15790717; hereafter Frens). See Nature Phys. Sci, V241, (1973), 20-22.
Regarding claims 1, 3, 6 and 9, Dorbath discloses a base material such as a glass frit having a coating containing colloidal gold made from AuCl4 in a quantity of 0.05 to 5.0% by weight, based on the pigment, Dorbath discloses having a coating containing colloidal gold is distinguished by high brilliance and outstanding performance properties in regard to compatibility with the ceramic substrates to be decorated. See claim 1 and col. 2, lines 25-35.
But it is silent about the gold size, the gold being citrated stabilized and the red color as applicant set forth in the claims
Frens discloses that a standard method results in Au NPs consisting of citrate stabilized nanoparticles synthesized from 0.01wt% HAuCl4 solution and 1wt% citrate solution and the method is evidenced to produce particles sizes from 24.5-71.5 nm with red color. See right column of page 20.
Thus, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the Frens’ method to make gold colloidal into the teaching of Dorbath, motivated by the fact that Frens discloses monodisperse gold suspension with sizes from 16 to 150 nm can be obtained by changing the citrate content and the red color can be obtained for gold particle size in the range of 24.5-71.5 nm. See right column of page 20.
Furthermore, Frens teaches a method of preparing Au and further teaches wherein the size of the gold nanoparticles dictates the resulting observed color such as red. Thus it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated suitably sized gold nanoparticles to generate a red observable color since the gold nanoparticles can predictably achieve red color and since matters related to the choice of ornamentation producing no mechanical effect or advantage considered to constitute the invention are considered obvious and do not impart patentability, In re Seid 73 USPQ 431.
Claims 1, 3-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over “Glossy Clear Liner” FetishGhost’s secret Studio 06 June 2009 submitted by applicant ion12/22/2020 IDS; hereafter Glossy), in view of Bernd Dorbath et al. to US 5,252,522 (hereafter Dorbath) and further in view of Frens et al, to “Controlled Nucleation for Regulation of the Particle Size in Monodisperse Gold Suspensions” (Submitted by applicant on 06/30/2020 for application15790717; hereafter Frens). See Nature Phys. Sci, V241, (1973), 20-22.
Regarding claims 1, 3 - 6 and 9, Glossy teaches a predictable glossy clear glaze which is very stable from cone 5 to cone 7 which comprises 20% G-200 Feldspar, 20% Ferro Frit 3134, 15% wollastonite, 20% kaolin EPK, 6 % talc, and 19% silica. See page 1.
But Glossy is silent about using the gold nanoparticle as applicant set forth in claims.
Dorbath discloses a base material such as a glass frit having a coating containing colloidal gold made from AuCl4 in a quantity of 0.05 to 5.0% by weight, based on the pigment, Dorbath discloses having a coating containing colloidal gold is distinguished by high brilliance and outstanding performance properties in regard to compatibility with the ceramic substrates to be decorated. See claim 1 and col. 2, lines 25-35.
Thus, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the glaze recipe of Glossy with gold nanoparticle as applicants set forth in the claims, motivated by the fact that Dorbath discloses having a coating containing colloidal gold is distinguished by high brilliance and outstanding performance properties in regard to compatibility with the ceramic substrates to be decorated.
But it is silent about the gold size, the gold being citrated stabilized and the red color as applicant set forth in the claims
Frens discloses that a standard method results in Au NPs consisting of citrate stabilized nanoparticles synthesized from 0.01wt% HAuCl4 solution and 1wt% citrate solution and the method is evidenced to produce particles sizes from 24.5-71.5 nm with red color. See right column of page 20.
Thus, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the Frens’ method to make gold colloidal into the combined teaching of Glossy and Dorbath, motivated by the fact that Frens discloses monodisperse gold suspension with sizes from 16 to 150 nm can be obtained by changing the citrate content and the red color can be obtained for gold particle size in the range of 24.5-71.5 nm. See right column of page 20.
Furthermore, Frens teaches a method of preparing Au and further teaches wherein the size of the gold nanoparticles dictates the resulting observed color such as red. Thus it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated suitably sized gold nanoparticles to generate a red observable color since the gold nanoparticles can predictably achieve red color and since matters related to the choice of ornamentation producing no mechanical effect or advantage considered to constitute the invention are considered obvious and do not impart patentability, In re Seid 73 USPQ 431.
Response to Arguments
Applicant's arguments filed 04/07/2026 have been fully considered but they are not persuasive.
The applicant argues that one skilled in the art looking to make purple pigments (Dorbath) would consider using the monodisperse gold suspensions in their process, the result is not (1) ceramic glaze material that produces an observable red color or (2) the pre-firing ceramic glaze material that produces an observable color selected from the group consisting of red and green on a ceramic item.
The Examiner respectfully submits that Dorbath discloses a base material such as a glass frit having a coating containing colloidal gold made from AuCl4 in a quantity of 0.05 to 5.0% by weight, based on the pigment, Dorbath discloses having a coating containing colloidal gold is distinguished by high brilliance and outstanding performance properties in regard to compatibility with the ceramic substrates to be decorated. See claim 1 and col. 2, lines 25-35. Frens discloses that a standard method results in Au NPs consisting of citrate stabilized nanoparticles synthesized from 0.01wt% HAuCl4 solution and 1wt% citrate solution and the method is evidenced to produce particles sizes from 24.5-71.5 nm with red color. See right column of page 20.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The applicant argues that Glossy refers to a clear glaze. Dorbath is directed to the production of purple pigments. Frens is silent as to glazes or pigments (or ceramics). None of the references disclose a pigment or glaze which produces an observable red (or green) color on a ceramic item post-firing in a kiln.
The Examiner respectfully submits that Frens discloses that a standard method results in Au NPs consisting of citrate stabilized nanoparticles synthesized from 0.01wt% HAuCl4 solution and 1wt% citrate solution and the method is evidenced to produce particles sizes from 24.5-71.5 nm with red color. See right column of page 20.
The rejections for the depended claims stand because no further argument is presented.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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